Loro Piana S.p.A. v. Mr. Sun King

Case No. D2011-1871

1. The Parties

2. The Domain Name and Registrar

The disputed domain name <loro-piana.asia> is registered with Dynadot, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2011. On October 31, 2011, the Center transmitted by email to Dynadot, LLC a request for registrar verification in connection with the disputed domain name. On November 1, 2011 Dynadot, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 10, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 30, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 14, 2011.

The Center appointed Rodrigo Azevedo as the sole panelist in this matter on December 15, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is the well known textile and fabrics producer Loro Piana, from Italy.

It was established in 1924 by Pietro Loro Piana and has acquired a strong reputation in the field of luxury goods. Presently, the Complainant owns more than 700 trademark registrations worldwide and more than 300 domain names consisting of or containing the expression "loro piana".

The disputed domain name was registered on June 5, 2011.

The Panel accessed the website displayed at the disputed domain name on December 27, 2011, when it pointed to a pay-per-click landing page with several links to third parties websites offering LORO PIANA and competing products.

5. Parties’ Contentions

A. Complainant

(i) The Complainant owns several international trademark registrations including the terms "loro piana", in particular in Asian countries. Moreover, the Complainant owns several Chinese national trademark registrations for LORO PIANA, also in Chinese characters. The Complainant’s name and trademarks are well known and recognized in any part of the world. The Complainant’s domain name portfolio consists of more than 300 domain names identical to or containing the LORO PIANA trademark. The disputed domain name is identical to the Complainant’s trademarks and domain names, followed by the TLD “.asia”. The TLD is not to be taken into consideration when assessing the identity/similarity between a trademark and a domain name. The same applies for the hyphen that divides the words “loro” and “piana”. The name Loro Piana has no meaning in Italian or in any other language since it corresponds to the surname of the family that founded the company. Therefore, the disputed domain name is identical or confusingly similar to Complainant's trademarks.

(ii) The Complainant never authorized the Respondent to use its LORO PIANA trademark, nor to register it as a domain name. The Respondent is not commonly known by the name Loro Piana. Before receiving the notice of the present dispute, the Respondent was not using the domain name in connection with a bona fide offering of goods or services. The Respondent is drawing an undue benefit from the reputation of the Complainant’s trademark. The Respondent promotes the sale of products bearing the Complainant’s trademark without the Complainant’s authorization. The use of a domain name identical or confusingly similar to the Complainant’s earlier trademarks to obtain profits from a pay per click advertising scheme, as well from the sale (direct or indirect) of goods bearing the Complainant’s or its competitor's trademarks, cannot be considered as a bona fide offering of goods or services. On August 31, 2011 the Complainant’s maintainer received an e-mail from an individual named Duan offering for sale the disputed domain name for 2.000,00 (two thousand) Euro. Therefore, the Complaint concludes that: a) there is no evidence of the Respondent’s use of, or demonstrable preparations to use the domain name with a bona fide offering of goods or services b) The Respondent has no connection with the Complainant, it did not license or authorize the Respondent to use the disputed domain name and its trademarks on the website accessible through the disputed domain name; c) the disputed domain name is evidently not the Respondent’s name, nor is there any evidence that the Respondent is commonly known by that name; d) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

(iii) The domain name <loro-piana.asia> was registered and is being used in bad faith. Given the extensive and longstanding use of the LORO PIANA trademark all over the world, including in Asia and specifically in China, the country of residence of the Respondent, it is obvious that the Respondent was aware of the Complainant’s trademarks prior to registering the disputed domain name. “Loro Piana” is not a descriptive or generic term; it cannot be found in a dictionary, nor is commonly used in Chinese or other languages. “Loro Piana” is an uncommon family name, and the mere fact that the disputed domain name is identical to this family name is a clear demonstration of the Respondent knowledge of the Complainant's trademark activities at the time of the registration. Immediately after having registered the domain name the Respondent contacted the Complainant’s maintainer in order to sell the domain name to the Complainant for an amount far beyond the normal out-of-pocket costs related to the registration of the domain name. The website published at the disputed domain name offers for sale LORO PIANA branded goods which the Complainant suspects to be counterfeit. The Complainant’s business is being disrupted by the use of the disputed domain name and this use is misleading Internet users and creating a likelihood of confusion with the Complainant’s trademark and activities.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) The respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Annexes 4 to 10 to the Complaint demonstrate registrations of the LORO PIANA trademark in several countries, including China.

The trademark LORO PIANA is wholly encompassed within the disputed domain name.

The mere addition of a hyphen between the words "loro" and "piana" do not distinguish the domain name from the Complainant’s mark. Neither the adoption of the TLD ".asia". In fact, the Panel is convinced that the registration of the disputed domain name - including the Complainant's trademark - under the TLD ".asia" potentially suggests that the website published there is related to the Complainant’s own business in that region, improving the confusingly similarity in the present case.

As a result, the Panel finds the disputed domain names to be confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides some examples without limitation where a respondent can demonstrate a right or legitimate interest in a domain name by showing one of the following facts:

(i) Before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or

(ii) The respondent has been commonly known by the domain name; or

(iii) The respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.

Based on the Respondent's default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant has not licensed or authorized the usage of its trademarks to the Respondent. The Respondent is not commonly known by the expression “loro-piana”, which consists of a well-known trademark directly connected with the Complainant’s business.

Consequently, the Panel is satisfied that the Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) The respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.

The Complainant's trademark was already known in the textile and luxory goods businesses when the disputed domain name was registered. Therefore, it is not feasible that the Respondent could ignore the Complainant’s reputation and business when it registered the disputed domain name.

It is unquestionable that Internet users frequently associate a domain name comprised of a trademark with the particular company that produces or offers goods and/or services under that mark (see DaimlerChrysler Corporation v. Brad Bargman,
WIPO Case No. D2000-0222).

Moreover, the use of the disputed domain name to promote pay-per-click links to LORO PIANA branded products - as well as to its competitor's products - makes clear that the adoption of the expression “loro-piana” to compose the disputed domain name was not a coincidence.

In doing so, the Respondent:

(i) creates a likelihood of confusion with the Complainant’s trademark;

(ii) obtains click-through revenue from this practice; and

(iii) deprives the Complainant from selling its products to prospective clients who are clearly looking for the Complainant and, at the same time, promote products offered by competitors.

In situations like this, former UDRP decisions have considered this type of use of a domain name enough to demonstrate bad faith. For reference on the subject, see Serta Inc. v. Charles Dawson,
WIPO Case No. D2008-1474, or also Asian World of Martial Arts Inc. v. Texas International Property Associates,
WIPO Case No. D2007-1415.

Finally, the offer to sell the disputed domain name to the Complainant for an amount far beyond the normal out-of-pocket costs related to the registration of the domain name completes the characterization of the third requirement of the Policy in the present case.

Accordingly, the Panel finds that the Complainant has proved that the disputed domain name was registered and is being used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <loro-piana.asia> be transferred to the Complainant.